Key takeaways
The scope of the dispute brought before the Court is incontestably governed by the principle that the parties define the subject-matter of the dispute, a general principle of law which is reiterated in Art. 76(1) UPCA.
This principle allows the claimant in the main action to exclude certain acts of infringement in order to avoid the inconvenience of parallel jurisdictions between the UPC and national courts during the transitional period provided for in Art. 83 of the Agreement (“carve out”).
However, this principle cannot restrict a defendant in its challenge to the validity of the European patent which is being asserted against it since no legal text that is binding upon UPC law expressly states such a restriction.
It is not necessary to apply Art. 71c for the UPC to be governed by the Brussels Ibis. Art. 29 to 30 of the Brussels Ibis are directly applicable to the UPC.
Art. 71(a) states that the UPC is a “common court” which “shall be deemed to be a court of a Member State”. This means that the UPC is subject to the “Member State courts” regime in this matter. Art. 29 and 30 of the Brussels Ibis are therefore directly applicable to the UPC.
BP comments: this statement deviates from the recent decision from CD Paris (UPC_CFI-484/2023) stating, in essence, that Art. 71(a) is not applicable to the UPC, otherwise Art. 71(c) would be superfluous.
There is no provision in the UPC Rules of Procedure that limits the party bringing a counterclaim to the parts of the patent asserted against it by the claimant in the infringement action, and no requirement that such party limit its action for revocation to what is asserted against it in the main infringement action
Only Art. 33(3) UPCA governing the internal jurisdiction of the UPC divisions provides that “(3) [a] counterclaim for revocation as referred to in
Article 32(1)(e) may be brought in the case of an action for infringement as referred to in Article 32(1)(a)”. The fact that the Plaintiff has chosen to exclude certain acts of infringement from its claims against some of the defendants does not limit those defendants’ right to challenge the validity of the patent in its entirety.
In accordance with Art. 69 EPC and the Protocol on its Interpretation, the present panel adopts the standard for the interpretation of patents set by the UPC Court of Appeal in two recent orders (UPC_CoA_335/2023 and UPC _CoA_1/2024), as follows:
1) The patent claim is not only the starting point, but the decisive basis for determining the protective scope of the European patent.
2) The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.
3) However, this does not mean that the patent claim serves only as a guideline and that its subject-matter may extend to what, from a consideration of the description and drawings, the patent proprietor has contemplated.
4) The patent claim is to be interpreted from the point of view of a person skilled in the art.
5) In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.
These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent.
Same prior art document but different assessment on inventive step compared to opposition decision from the EPO
The patent-in-suit was previously challenged by an opposition before the EPO. With the decision in May 2023, the EPO rejected the opposition and the patent was maintained in its granted form. The EPO found that claim 1 involved an inventive step in view of D14 (= D1 in the present UPC proceedings, US 2015/0205947- “Berman”).
However, the LD Paris found that claim 1 is obvious in view of Berman, deviating from the EPO’s previous assessment.
Division
Paris (FR) Local Division
UPC number
UPC_CFI_230/2023
ACT_546446/2023
Type of proceedings
Infringement Action with counterclaim for revocation
Parties
DexCom, Inc.
vs.
Abbott Scandinavia Aktiebolag, Abbott NV / SA, Abbott S.r.l., Abbott Diabetes Care Inc., Abbott Diagnostics GmbH, Abbott France, Abbott B.V., Abbott Logistics B.V., Abbott GmbH, Abbott Laboratories
Patent(s)
EP3435866 (Proprietor: DexCom, Inc.)
Body of legislation / Rules
EPC: Art. 54, Art. 56, Art. 69, Art. 138(1)
UPCA: Art. 31, Art. 32(1), Art. 65(2), Art. 65(5), Art. 69, Art. 76(1), Art. 83
UPC RoP: Rule 30, Rule 118.5
Regulation (EU) No 1215/2012 Brussels I recast (Brussels Ibis): Art. 29 to 30, Art. 71c
